Navy Federal Credit Union v. Domain May Be For Sale, Check Afternic.com Domain Admin / Domain Registries Foundation
Claim Number: FA1802001772968
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Domain May Be For Sale, Check Afternic.com Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <navyfeeederal.org>, <navyedral.org> and <navyfnavyfederal.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2018; the Forum received payment on February 22, 2018.
On February 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navyfeeederal.org>, <navyedral.org>, and <navyfnavyfederal.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@navyfeeederal.org, postmaster@navyedral.org, postmaster@navyfnavyfederal.org. Also on February 26, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 19, 2018.
On March 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Founded in 1933, Complainant was chartered under its current name, Navy Federal Credit Union, in 1954. Offering a broad spectrum of products and services, Complainant provides financial services to military members and their families.
- Complainant has consistently used its registered service mark, NAVY FEDERAL, to promote its goods and services.
- The disputed domain names, <navyfeeederal.org>, <navyedral.org> and <navyfnavyfederal.org>, are confusingly similar to Complainant's NAVY FEDERAL service mark. The names correspond to simple misspellings or typographical errors that internet users might make when seeking Complainant's services.
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the names. Complainant has never authorized Respondent to use the NAVY FEDERAL mark. For pecuniary gain, Respondent uses the disputed domain names for websites containing links to Complainant's services or to the websites of third parties who market services unrelated to or competing with Complainant's services. Such use is neither a bona fide offering of goods or services nor a noncommercial or fair use of the names.
- The disputed domain names were registered and are being used in bad faith. Respondent's current use of the names constitutes bad faith per Policy ¶ 4(b)(iii) and (iv). Moreover, Respondent's use of a privacy service to register the disputed domain names is further evidence of Respondent's bad faith conduct.
B. Respondent
- Respondent owns a portfolio of generic and descriptive domain names which it acquired lawfully. Respondent has a policy whereby it invites contact from those claiming that any such domain name might violate a trademark. Respondent is likely to voluntarily transfer those domain names, irrespective of the legitimacy of the complaining arguments, to avoid the time and expense of administrative hearings.
- Upon learning of this matter, Respondent contacted Complainant to offer a voluntary transfer of the disputed domain names. No agreement was reached.
- Respondent is now willing to voluntarily transfer the disputed domain names to Complainant. Respondent requests that the transfer be ordered without findings of fact or conclusions as to Policy ¶ 4(a).
- Respondent has no specific response to the contentions made in the Complaint.
Complainant is an established United States of America organization specializing in providing financial products and services to United States military members and their families. It operates under the NAVY FEDERAL service mark, which it has registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,994,078; registered Sept. 13, 2005).
The disputed domain names, <navyfeeederal.org>, <navyedral.org>, and <navyfnavyfederal.org>, are owned by Respondent and were registered, respectively, on June 22, 2017, June 8, 2017 and May 30, 2017. All of the names resolve to websites that provide links to Complainant's services and/or to the websites of third parties that offer products and services unrelated to or competitive with those offered by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Consent to Transfer
In accordance with its unilateral consent to transfer, Respondent requests the Panel to order such a transfer without rendering findings pursuant to Policy ¶ 4(a). To support that request, Respondent directs the Panel to various prior UDRP cases wherein panels have applied that approach in rendering abbreviated decisions to allow for such transfers. See Body Shop Intern'l plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Forum May 25, 2006); see also Cartoon Network LP v. Morgan, D2005-1132 (Wipo Jan 5, 2006).
However, the Panel notes that there are also many prior decisions that find that said approach is not necessarily appropriate, particularly if there is the suggestion from the filings that that approach might simply allow cybersquatters to evade adverse rulings. See Guess?, Inc. v. Domain Registries Foundation, FA 1758582 (Forum Dec. 13, 2017) ("The 'consent-to-transfer' approach is but one way for cybersquatters to avoid adverse findings against them.); see also ABC Liquors, Inc. v. Texas Intern'l Prop. Assoc's, FA 1266499 (Forum July 28, 2009) ("...it may be decided that this expeditious approach would be a way for cybersquatters to avoid adverse findings against them.").
In this case, the Response asserts most prominently that Respondent owns a portfolio of generic and descriptive domain names. However, "navyfeeederal", "navyedral" and "navyfnavyfederal" are clearly not generic or descriptive terms. Such obvious misdirection on the part of Respondent and its counsel leads the Panel to the eschew the "consent-to-transfer" approach in favor of a full decision, considering all requisite elements pursuant to Policy ¶ 4(a).
Complainant has established its rights in the NAVY FEDERAL service mark by submission of clear evidence to the Panel of USPTO registrations for that mark. See Humor Rainbow, Inc. v. Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark."); see also Beyoncé v. Chanphut, FA 1626334 (Forum Aug. 3, 2015) ("Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i).").
The Panel concludes that none of the disputed domain names, <navyfeeederal.org>, <navyedral.org> or <navyfnavyfederal.org>, is identical to the NAVY FEDERAL service mark. While all of the names begin with "navy" and end with "ral" (before the inclusion of an obligatory internet suffix, ".org"), the Panel concludes that each disputed domain name differs from the mark by the insertion or subtraction of a few letters between such beginning and ending. However, the Panel views these deviations as insignificant and characteristic of classic typosquatting, in which devious registrants attempt to ensnare some internet users who are guilty merely of sloppy key entry. Therefore, the Panel finds all of the disputed domain names to be confusingly similar to Complainant's service mark. See Navy Federal v. Tulip Trading Co., FA 1743402 (Forum Sept. 12, 2017) (finding <navyfrederal.com> and <navyferal.com> to be confusingly similar to the NAVY FEDERAL mark); see also Navy Federal v. Privacy Protection, FA 1601378 (Forum Feb. 26, 2015) ("...the Panel finds that Respondent’s <navyfederral.org> domain name is confusing similarity to Complainant’s NAVY FEDERAL mark.").
As a result, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that it gave no authorization for Respondent to use the NAVY FEDERAL mark, and the disputed domain names are confusingly similar to that mark, so the Panel believes that Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in those names. To prevail in these proceedings, Respondent must rebut that case. See Neal & Massey Holdings Ltd v. Ricks, FA 1549327 (Forum Apr. 12, 2014); see also Adv. Intern'l Marketing Corp. v. AA-1 Corp, FA 1406896 (Forum Nov. 2, 2011) ("According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case to support its allegations and that once it does so, Respondent has the burden of proof to show such rights or legitimate interests.").
According to the Response, Respondent's primary rationale for rebuttal centers on claiming that the disputed domain names consist of generic words and phrases. While there is a generic word, "navy", in all of the names (and the common word, "federal", in one name), the claim, as noted above, that even one of the names has any generic meaning is untenable in the opinion of the Panel.
Furthermore, as evident in Complainant's submissions, all of the disputed domain names attach to websites that furnish links — undoubtedly on a pay-per-click basis — to Complainant's own services and/or to third-party websites offering competing or unrelated services. Such use constitutes neither "a bona fide offer of goods or services" per Policy ¶ 4(c)(i) nor a "legitimate noncommercial or fair use" of the names per Policy ¶ 4(c)(iii). See Clark Automobiles Ltd v. Domain Registries Foundation, D2016-2035 (Wipo Nov. 24, 2016) ("...the Panel finds that the use of the disputed domain name to establish a web page with sponsored links to websites for products competing with those offered by the Complainant is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name."); see also TGI Friday’s of Minnesota, Inc v. Domain Registries Foundation, FA 1671159 (Forum May 24, 2016 ) ("Panels have found that using a domain to display links and advertisements to services or products, some of which compete with a complainant’s business, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.").
Finally, the disputed domain names in no way resemble Respondent's name, so the Panel concludes that Respondent is not commonly known by any of the disputed domain names, rendering Policy ¶ 4(c)(ii) inapplicable as well.
As a result, Complainant's prima facie case prevails, and the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
In viewing Complainant's submissions related to the webpages to which the disputed domain names resolve, the Panel could not help but notice the phrase "Buy this domain" in the upper right corner of each webpage. The Panel determines that this is an obvious solicitation by Respondent to obtain valuable consideration in excess of the actual out-of-pocket costs directly related to registering the disputed domain names and, as such, provides conclusive evidence of bad faith registration and use of those names per Policy ¶ 4(b)(i). See Robert Half International Inc. v. Domain Registries Foundation, FA 1769400 (Forum Mar. 8, 2018) ("Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i)....As noted above, Respondent displays a link stating “Buy this domain” on the resolving webpage."); see also Pfizer Inc. v. Purdy, D2016-2367 (Wipo Jan. 3, 2017) ("...the title of the website reads "Buy This Domain"... which is a circumstance of registration in bad faith pursuant to Policy paragraph 4(b)(i).").
As a result, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navyfeeederal.org>, <navyedral.org>, and <navyfnavyfederal.org> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: April 11, 2018
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